Due to the similarities between the graphic design patent right and prior trademark right of the graphic design products, the rights of the two are easily confused, and conflicts occur from time to time. There are major disagreements in practice and theory regarding how to resolve contradictions in the patent examination stage or the subsequent invalidation stage. This article proposes the suggestions for resolving conflicts in the current stage from perspectives of the definition, difference and connection of the two rights. In particular, the newly revised Guidelines for Patent Examination has been implemented since November 1, 2019. A new provision was added in design application that the deferred examination is permissible, which provides multiple strategic options for enterprises to apply for graphic design patents and registered trademarks.
Both the number of Chinese patent applications and valid patents have always been at the forefront of the world. As one of the three major patents, graphic design patents have an annual increase of more than 20%. The focus on the original design of products leads to a rapidly increasing number of infringements on design patents at exhibitions and expositions in various industries at home and abroad each year.
Observed from the data released by the CNIPA Review and Invalidation Trial Department and the Intellectual Property Court, the number of infringement and invalidity cases of graphically industrial design patents is steadily on the increase. Among them, the overall visual effects presented by graphic design patents show considerable resemblance to that of trademarks. Therefore, conflicts aroused from prior trademark rights have drawn widespread concern in society.
Differences and Connections between Graphic Design Patents and Graphic Trademark Rights
A design patent is limited to one product and protects the product's shape, pattern, and the combination of colors. According to the Patent Law, which was implemented after the third amendment in 2010, the primary purpose of its legislation is to resolve the conflicts between the overlapping of design patent rights and other related rights, mainly trademark rights. It purports to exclude print products that primarily function as logos, which play the same role as trademarks.
The print products in the design patents mainly include products like bottle sticks, labels, etc., which are produced by printing technology and have only two-dimensional shapes. The main design points are the text, patterns and the combination of colors. The function of the product is to highlight the functional attributes of the attachment, and the design content includes conventional design points such as the name and role of the attachment in addition to the innovation.
Trademarks are used by producers or operators on the goods they produce, manufacture, process, pick, or distribute, or on the services provided by service providers. They are with distinctive features and used to distinguish the source of goods or services, comprised of characters, graphics, letters, numbers, three-dimensional logos, color combinations, or a combination of the above elements. The Trademark Law of China stipulates that trademarks registered and approved by the Trademark Office have exclusive rights to use trademarks and are protected by law. The distinctiveness of a trademark refers to the characteristics of it, which can be distinguished from other trademarks of the same or similar products. On the contrary, the quality guarantee of the product is highlighted through the distinctiveness of the trademark.
Graphic design patents and trademark rights both belong to industrial property rights. It can be told from the definitions of the two that their scope of protection overlaps. There is virtually no difference in the main design points between the printed products and the trademark's characters, letters, numbers, graphics, color combinations, or combinations of the above elements. Therefore it can easily cause right conflicts between the graphic design patents and trademarks rights.
However, there are differences between graphic design patents and flat trademark rights. First, the two have different years of protection. Although the academic circles have been calling for the extension of protection term for design patents over recent years, under the current Patent Law, it is stipulated to be ten years. After the period, anyone can use the design, or even being promoted to use and develop it into a better design.
While the Trademark Law stipulates that the validity period of a registered trademark is ten years from the date of approval of the registration. If the trademark needs to continue to be used, then an application for renewal within six months before the expiration is required. The renewal of registration is valid for ten years and theoretically can be renewed an unlimited number of times. That is, China does not encourage or call for manufacturers of the same product to use the same trademark, and it cannot be promoted and applied.
Second, the two reflect different values. Although design patent right and trademark right are intangible assets of the rights holder, the graphic design patent reflects its own value through a two-dimensional carrier and reflects the intellectual creation of the patentee; while the registered trademark uses the pattern, appearance or their combination to form a trademark logo, which acts on the carrier of a commodity. A trademark that is detached from a commodity has no value of its own or use value. Only by being attached to a specific commodity can the special value of the trademark be reflected.
Third, the two have different requirements on the disclosed existing technology. The design patent claims that the patented product cannot be known to the public in any way before the filing date, and cannot be the same or similar to the existing ones, which emphasizes its originality. While as long as the registered trademark is not the same or similar to trademarks on other similar products before the filing date, whenever the unregistered trademark is used, it will not affect the examination and approval of the registered trademark, and emphasizes the use under specific conditions.
Judicial Practice in Patent Examination Phase or Invalidation Phase inspired by Safeguard（舒肤佳） Case
Case On February 28, 2019, Procter & Gamble Company requested for invalidation to the original Patent Reexamination Board, targeting the graphic design patent named ‘Detegy’ from the patentee Shenzhen Procter & Gamble Washing Technology Co., Ltd., on the grounds of not complying with the provisions of Article 23, Paragraph 3 of the Patent Law. P&G company deemed that the design patent infringes on the registered person's (in this case P&G) right to display the "舒肤佳" (Safeguard in English) trademark. The original Patent Reexamination Board accepted the request for invalidation. After trial, the design patent was found to infringe the prior trademark right and did not comply with Article 23 (3) of the Patent Law.
The original Patent Reexamination Board held that the laundry powder contained in the patent packaging bag involved in the case is similar to the soap and detergent used in the products of the previous trademark. Compared with the previous trademark, the patent involved in the case completely included the text of the previous trademark, "舒肤佳" (Safeguard in English), and is located in a prominent position in the middle of the main view, and the pronunciation and meaning of the two are exactly the same, but only the fonts are slightly different. When applying to the same or similar products, it may confuse and mislead the public about the source of products. The patent involved in the case uses a design similar to the previous trademark on similar products, which damages the legitimate rights and interests of the prior trademark owner. Therefore, the patent involved conflicts with the legal rights obtained by others before the filing date, which is not complying with the Article 23 (3) of the Patent Law.
Induction of criteria for conflict of rights
According to China’s Interpretation of the Supreme People's Court Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks, Article 9, paragraph 2 states: Trademark approximation refers to the comparison of the accused trademark with the plaintiff's registered trademark, the composition and color of the graphic, pronunciation, meaning, graphics of the text, the overall structure of the combined elements mentioned above, or the three-dimensional shape and color combination show certain level of approximation, which may mislead the public about the source of the commodity or make the public wrongly believe that there is certain connection with the plaintiff's registered trademark.
The same or similar determination of the patent involved in the case and the prior patent, in principle can be applied to the judging criteria for the same or similar trademark. Based on the above case, the following comments can be summarized:
First of all, the commodities corresponding to the patented product in question should belong to the same or similar categories as those used in the previous trademark.
The identical and similar characteristics of the design products are judged according to the use of the products. If the products are for the same or similar use, the design products are the same or similar. To determine whether trademarks are the same or similar, not only the similarity of goods, but also the glyphs, graphics, pronunciation, and even meaning should be taken into consideration.
If the two-dimensional products involved in the questionable patent and the previous trademark only belong to the replacement of commonly used materials, or the difference in size without causing changes in the product design, then the two belong to the same design, that is, the graphic design infringes the prior trademark right.
Secondly, the patent in question contains the same or similar design content as the prior trademark. The protection scope of the questionable patents is based on the design of the product represented by the view. The design of two-dimensional products can also be divided into component products, kit products and similar design products. Among them, the component products are mainly products without a unique assembly relationship, such as playing cards, intellectual game cards, etc. According to the Patent Law, the meaning of a patent is to encourage inventions, promote the application of inventions and innovations, and improve innovation capabilities. Design patents should also be new designs that are aesthetic and suitable for industrial applications. However, the patent involved in the case contains the same or similar design of the prior trademark, which is contrary to the meaning of Patent Law.
Thirdly, the public is likely to confuse the patent in question with the prior trademark. The main body of judgment for Patent Law is the general consumer, who has a common sense of the existing same and similar types of products and common design techniques, and has certain resolving ability; the main body of judgment for Trademark Law is mainly commodity dealers, consumers related to trademarks on certain commodities. These people can be referred to as relevant public, who are not likely to confuse trademark awareness, brand value, and distinctiveness. The main body of judgment in design patents lies in the design itself, and the main body of judgment in trademarks mainly lies in the products of the trademarks and trademarked products.
Fourthly, the relevant public has sufficient expectations and trust in the quality of the goods identified by the prior trademark. Prior trademark rights, to some extent, are able to stop unfair competition such as passing-off, and fully protect the rights of trademark owners. That is to say, the quality and property of the goods corresponding to the trademark have been recognized and confirmed by the relevant public groups. Only when there is sufficient trust in the goods can the prior trademark rights have a profound impact on subsequent rights.
Summary
At this stage, the scope of protection of the patent right and prior trademark right for graphic design may inevitably overlap, causing rights conflicts in the practical applications between the two. In general, graphic design patents and trademarks are used on the outer packaging of commodities. Under certain conditions, registered trademarks can also be protected by design patents. When the design patent and trademark right of the same commodity belongs to different rights holders, conflicts may arise. The relatively severe consequence of the conflict is the confusion between the graphic design patent right and the prior trademark, which misleads the relevant public to believe that the patent right is owned by the trademark owner or the source of the patent product is related to the source of the product of the prior trademark, and so on.
At the current stage, to avoid conflicts of rights to a greater extent, the following aspects should be paid attention to:
Focusing on the original design, eliminating the same or similar design, especially in the product design process, excluding design elements that are easily confused with the same or similar categories of trademark products. The definition of a design patent refers to a new design made of the combination of three elements of a product, which is aesthetic and suitable for industrial applications. At the same time, the purpose of the Patent Law is to encourage inventions and creations, promote their applications, improve innovation capabilities, and promote social progress. Only original designs that reflect the value of the product and meet the development of the times can evade conflicts of rights.
Regular or irregular monitoring of the legal effects of the rights. Although the trademark right can be renewed indefinitely, there are also many factors that may lead to its invalidation. For example, the trademark right conflicts with the previously acquired rights, and the registration is obtained through improper ways, etc. Even if the expired trademark right is used, it is also not protected by law. And it is also necessary to pay attention to whether the expired trademark right has been successfully registered by others and continued to be used.
Solving the separate law enforcement and strengthening coordination to form a continuation of rights between different systems. After the reform of state institutions, the Trademark Office and the Patent Office are both affiliated to the National Intellectual Property Administration, PRC. According to the Trademark Law, there is a three-month objection period after the announcement of the trademark right. As long as anyone objects, the trademark registration applicant cannot obtain the rights as scheduled, while the design patent can be announced after the preliminary examination granting the patent right. If the trademark is filed for patent right and objection during the objection period, it will severely hurt the interests of the trademark applicant. In this regard, if the Patent Office and the Trademark Office can share databases and establish a domestic priority system in which design patent applications and trademark registration applications are mutually available, it can better prevent malicious harm in terms of systems and examinations.
Intensifying the search for new discoveries, making reasonable use of rules, and improving the layout of intellectual property as soon as possible. During the process of design, production, sales, and after-sale of original products, designers should conduct corresponding patent searches. In particular, they should pay attention to the search for new products of the same and similar categories. The search data sources include not only existing patents and trademarks, but also Internet evidence retrieval at home and abroad, and designers should also actively apply for rights in patents, trademarks and even copyrights related to the product.
In particular, the Guidelines for Patent Examination, which came into effect on November 1, 2019, adding the content of delaying examination of design applications. It is suggested that designers can adopt the strategy of applying for multiple rights at the same time and delaying patent examination after obtaining trademark rights, and observe market feedback of trademark rights for public use, and then study whether to continue to protect design patent rights.
Reference:
[1] National Intellectual Property Administration of the People's Republic of China. 2010. Guidelines for Patent Examination [M]. Beijing: Intellectual Property Press.
[2] Hu Gang. 2002. Discussion on the Conflict of Trademark Rights and Design Patent Rights. Intellectual Property, 2002, 12 (5): 26-29
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